Ex Parte Feldman

Board of Patent Appeals and Interferences

Sep 22, 2003

09524858 (B.P.A.I. Sep. 22, 2003)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID L. FELDMAN
____________
Appeal No. 2001-2687
Application No. 09/524,858
____________
ON BRIEF
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Before JERRY SMITH, BLANKENSHIP, and SAADAT, Administrative Patent Judges.
BLANKENSHIP, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner’s final
rejection of claims 36-42, which are all the claims remaining in the application.
We reverse.
Appeal No. 2001-2687
Application No. 09/524,858
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BACKGROUND
The disclosed invention relates to a multi-chip module. Representative claim 40
is reproduced below.
40. A computer module comprising a central processing unit, a serial port, a
parallel port, a drive controller, a keyboard interface, a DRAM interface and flash
memory mounted in a relatively flat rectangular housing which is adapted to be
mounted on a circuit board in a flat position, and a plurality of connector pins
extending from the housing and arranged in a single row along three adjacent
peripheral edges of the housing for connection to electrical conductors on the
circuit board.
The examiner relies on the following references:
Zamborelli et al. (Zamborelli) 5,646,542 Jul. 8, 1997
Cunningham et al. (Cunningham) 5,659,680 Aug. 19, 1997
Claims 36-39 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Cunningham and Zamborelli.
Claims 40-42 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Cunningham.
We refer to the Final Rejection (Paper No. 4) and the Examiner's Answer (Paper
No. 8) for a statement of the examiner’s position and to the Brief (Paper No. 6) and the
Reply Brief (Paper No. 9) for appellant’s position with respect to the claims which stand
rejected.
Appeal No. 2001-2687
Application No. 09/524,858
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OPINION
We will reverse the rejections of the claims under 35 U.S.C. § 103 for the
reasons summarized by appellant at page 2 of the Reply Brief. The system
components in Cunningham are “mounted on a motherboard or card which is
connected to a back plane by edge connectors, and contrary to the Examiner’s
contention, the components which make up the computer system in Cunningham et al.
are not mounted in a relatively flat housing which is adapted to be mounted on a circuit
board.”
The rejections contend that Cunningham teaches the claimed computer
elements “mounted in a relatively flat housing which is adapted to be mounted on a
circuit board in a flat position” (Claim 36), and “mounted in a relatively flat rectangular
housing which is adapted to be mounted on a circuit board in a flat position” (Claim 40).
(Answer at 4-6.) The Answer does not specifically point out where the relevant
“housing” may be found, nor what the “module” may be, but refers to Figures 2b and 3
of Cunningham.
Figure 1 of Cunningham illustrates a diagnostic test system 100. The rear face
of the system contains standard PC compatible ports. Cunningham col. 4, ll. 24-54.
The internal layout of the system (Fig. 2A) includes four primary circuit boards: a
motherboard 300, a keypad adapter 301, a backplane 311, and a PCMCIA adapter
board 323 (FIG. 3) coupled to the PCMCIA board connector 321 of the backplane 311.
Appeal No. 2001-2687
Application No. 09/524,858
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Col. 4, l. 65 - col. 5, l. 3. Figure 3 of Cunningham illustrates the numerous chips and
other components making up the boards. Col. 5, l. 4 et seq.
The physical relationship between the various boards and I/O module slots are
shown in Figures 2b, 2c, and 2d. Col. 11, ll. 24-26. The motherboard 300 contains the
bulk of the circuitry of the test system 100. As illustrated in Fig. 3, the motherboard 300
includes standard PC motherboard components, integral VGA LCD/CRT display
controller 302, integral board mounted hard disk support 306, Flash BIOS 308A, 308B,
a system memory 310, serial (312, 314) and parallel (316) ports, an optional floppy
controller 318, and a power supply 320. Col. 12, ll. 4-10. The motherboard is made up
of a four layer construction, with the majority of the components being surface mounted,
such that all components can be mounted on one side of the board. Id. at ll. 30-41.
Figure 2b of Cunningham depicts motherboard 300 as being substantially
rectangular. However, we agree with appellant that the above-quoted language of
instant claims 36 and 40 distinguishes over the circuit boards and components
disclosed by Cunningham. We disagree with the examiner’s apparent claim
interpretation, as suggested at page 19 of the Answer. If the functions of the claimed
components were to be found in a single integrated circuit package, in our view the
device would not meet the claim requirement that the components be “mounted” in a
relatively flat housing.
We note that the relevant claim requirements are consistent with the structure of
a multi-chip module, as disclosed by appellant. The examiner refers to several
Appeal No. 2001-2687
Application No. 09/524,858
1 We acknowledge that it may be proper to produce new evidence (e.g., a reference) in support of
a fact officially noticed, when the asserted fact has been traversed by an applicant. In that case, absent
entering new grounds of rejection, the reference could only be used for the limited purpose of showing the
fact alleged, rather than for any additional teachings it might provide. In any event, the critical feature that
the rejections allege to be taught by Cunningham was not contained in any of the instances of “Official
Notice” in the rejections.
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references in the Answer that are not applied in the instant rejections. Cf. In re Hoch,
428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970) (“Where a reference is
relied on to support a rejection, whether or not in a ‘minor capacity,’ there would appear
to be no excuse for not positively including the reference in the statement of rejection.”).
Of those references, it appears that only one (U.S. Patent 4,763,188; Johnson)
describes structure consistent with a multi-chip module, a fact which may further
indicate that the rejections are based on an erroneous interpretation of the instant
claims.1
The examiner has not shown that Cunningham or Zamborelli, or any combination
thereof, discloses or suggests all the requirements of independent claims 36 and 40.
See In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001) (in a
determination of unpatentability “the Board must point to some concrete evidence in the
record in support of...[the]...findings”). We thus do not sustain the Section 103
rejections of the claims.
Appeal No. 2001-2687
Application No. 09/524,858
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CONCLUSION
The rejections of claims 36-42 under 35 U.S.C. § 103 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
HOWARD B. BLANKENSHIP ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
Appeal No. 2001-2687
Application No. 09/524,858
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Edward S Wright Esq
Flehr Hohbach Test Albritton & Herbert LLP
Four Embarcadero Center
Suite 3400
San Francisco , CA 94111-4187